What is a trademark?
A trademark is a sign capable of distinguishing the goods or services of one company in the market from those of other companies. Accordingly, it is vital that the trademark has distinctive or distinguishing capacity: it must be able to identify a business source. If you have any questions about how to file a trademark, please get in touch.
What signs can represent a trademark?
A trademark may consist of any sign (a word, a set of words, a logo, a logo coupled with a name, a three-dimensional shape, a movement, a sound, a pattern, etc.), provided that this sign is represented in such a way as to enable the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its owner. Since 14 January 2019, it has no longer been necessary for trademarks in Spain to be represented graphically in order to gain access to registration.
How do I get my trademark protected?
In principle and with few exceptions (the case of the well-known unregistered trademark), the owner of a distinctive sign must register it with the corresponding registration office to obtain protection. Registration is constitutive: the right arises from registration. If you’re unsure how to file a trademark, you can call or write to us; we will be happy to help you.
Is the protection I can get worldwide?
It may be, but this is unusual because of the exorbitant costs. Trademark registrations are territorial, so they grant protection for a certain territory, which may be a country (e.g. Spain) or a region (e.g. the European Union). There is no international trademark registration as such that covers every country in the world. There is, however, a system of application where several countries can be designated together, through what is known as the Madrid Union, which allows the application of international trademarks. However, this system is an application-only system: designations in each of the countries where protection is sought are then processed as if they were national applications. To file a trademark, it is normal to start with one or more countries of interest and plan international growth in the short or medium term, depending on the company’s growth and development.
I use my trademark for some products and there is another company that uses the same trademark for different products, am I likely to have a conflict?
Trademarks are always registered for certain goods or services, within an international classification called the Nice Classification. When you register a trademark, you must choose one or more of these classes. This relationship between trademarks and the specific goods or services they cover is known as the principle of speciality. In general, and unless one of the opposing trademarks is well known or famous, two identical signs may coexist in the marketplace provided that they distinguish different goods or services, without that identity between signs generally causing confusion or association in the consumer public.
However, confusion may exist even if the goods or services are not identical, but are similar, related, complementary or confusing. For example, although the product “computer programs” is not identical to the service “web development”, it is clear that these are two clearly related activities in the course of trade, whereby if there were two identical or similar trademarks distinguishing one and the other of these goods and services, they could give rise to confusion or association on the part of the public, even though they do not cover identical goods or services.
What protection does the trademark grant?
Basically, the right of the owner of a registered trademark is divided into two parts, one positive and the other negative. The positive one implies that solely the owner will have the power to use and exploit his trademark in the protected territory for the designated goods or services, with total exclusivity. The negative aspect implies that the owner may prohibit any third party from making use of that trademark or a similar one for identical or similar goods or services, where such use is likely to cause confusion or association in the consumer.
The right granted by the trademark is therefore both exclusive and exclusionary. Accordingly, registering a trademark is essential for a company.
On the other hand, the owner may dispose of his proprietary right over the trademark: he may licence it, transfer it, and constitute rights in rem over it (e.g., attachment or mortgage).
How long does the trademark right last?
The registered trademark can be held by its owner for an unlimited number of 10-year periods. This means that the legal monopoly granted to the trademark owner can become indefinite in time, provided that the owner pays renewal fees every 10 years and uses his trademark effectively in the territory for which it has been registered in relation to the goods or services covered.
How much does trademark registration cost?
The cost of filing a trademark varies depending on the number of Nice classifications to be covered and the country or countries where protection is sought.
If you would like to receive a quote, please write to email@example.com.
Why is it important to register a trademark via a specialist?
At Bamboo we are lawyers who specialise in trademarks. It is extremely important that you do not try to register your trademark by yourself, as you could make mistakes, particularly in choosing the Nice classifications and in the wording of the goods or services.
Moreover, you should be aware that neither the Spanish Patent and Trademark Office (SPTO) nor the European Union Intellectual Property Office (EUIPO) nor practically any other office in the world, acts by virtue of their own office with respect to applications that are similar or identical to earlier registered trademarks. What this means is that, if you apply for your trademark without a specialist, it will be difficult to subsequently notice whether a trademark equal or similar to yours is applied for that could infringe your priority rights.
At Bamboo -and included in the price of the trademark application- we give you surveillance and monitoring of your file until its next renewal (10 years), and we warn you if we detect any trademark filing that could conflict with yours, so that later you can decide whether or not to file an opposition to that application, under our recommendations.
I have detected that a third party has filed for a trademark very similar to the one I have registered, what can I do?
If this has happened, the first thing to do is to check the publication date of the infringing application. Our trademark legislation grants a deadline of two months (which in European regulations is three months) for any third party who considers himself to be harmed to file an opposition to a trademark application, calculated from publication of the application.
If this is your case, call or write to us. As trademark lawyers, we will be able to help and advise you.
What are the prohibitions on filing a trademark?
The prohibitions contained in our trademark law are divided into absolute and relative.
Absolute prohibitions operate independently of prior rights of third parties. These prohibitions may be invoked both by the Spanish Patent and Trademark Office itself and by any person who considers it appropriate to file an opposition on the basis of such prohibitions.
In general, these prohibitions relate to terms which, either because they are devoid of a distinctive nature, are generic in nature or description, cannot be monopolised by a single economic operator in the market and must be freely available to all.
The list of absolute prohibitions also includes other grounds for prohibition, such as the misleading nature of the sign, its status as contrary to public policy or morality, or the use of official emblems or signs, among other reasons.
Unlike absolute prohibitions, the application of relative prohibitions does depend on the existence of prior rights of third parties. These rights can be, for example, trademarks applied for or filed earlier, but also other intellectual or industrial property rights.
I applied for a trademark by myself and the Office has suspended it, what can I do?
There may be various grounds for suspending an application (incorrect wording of the goods or services, incorrect classification of the goods or services, an opposition received from a third party, an indication by the Office of an absolute prohibition of registration, etc.). The best thing you can do is to put the file in the hands of a specialist, who will assess the chances of success and the paths to take. At Bamboo we are trademark lawyers, so you can bring your matter to us and we will assess it jointly.
Do I have to use my trademark for the goods or services it covers?
The answer is yes. Our regulations are configured in such a way that no one should be able to maintain indefinite trademark registrations over a period of time if they do not have a real interest in using the sign in the market for the goods or services for which it has been registered. However, our Trademark Law grants a five-year “grace period” from publication of the granting of the trademark, during which no-one can request proof of use of the trademark or request its revocation. It is, let us say, a period of time that the legislator has understood as sufficient and reasonable for the trademark owner to effectively put it on the market and actually start selling the protected products or services. After this five-year period, any trademark is vulnerable to a claim for revocation from any third party who can prove a legitimate interest in its cancellation. This is particularly useful if that trademark which we suspect is not in use is prior to our own or our future application and we believe that it may be able to prevent registration or use of our sign.
I don’t have a trademark registration but I am using it in the market, what risks am I exposing myself to?
This is a situation of maximum risk that can jeopardise a company’s development, to the point that it can mean its definitive failure. Operating in today’s marketplace without a trademark registration is nothing short of suicide. In the same way that by registering our trademark we can prevent any third party from using it in the market for identical or similar products or services, the reverse also holds true, logically: a third party can turn up with a registered trademark, which may even have started its activity after us, and prevent us from using our unregistered trademark and even claim financial compensation from us, which in many cases can be very high (at least 1% of our turnover in the last 5 years). If we are unable to prove that this third party knew us and applied for its mark in bad faith, or that our earlier unregistered mark is well-known (i.e. that it is known by the public for whom our goods or services are intended), and the trademarks are really confusing, there is little we can do beyond trying to negotiate. That’s why registering a trademark is so vital.
It’s surprising to see just how companies of all kinds invest huge sums of money in building a solid corporate identity (naming, branding, domain name, online marketing, business cards, flyers, posters, you name it…) and don’t bother to protect the very thing their communication strategy is focused on and which is nothing less than what they want to be identified with in the market: their brand. For a few hundred euros in most cases, extremely unpleasant situations can be avoided.
If you’ve been involved in a similar case, give us a call. As trademark lawyers, we can try to come up with a solution.
Do I need a trademark registration if I already have a domain name?
The answer is clearly yes. The legal regime of trademarks and domain names is different, and a domain name simply does not provide the protection afforded by a trademark. A domain name grants a right of use for a certain period of time of some terms or words that replace – through the DNS system (Domain Name System) – the numbers of an IP address, where the website content is hosted, so that it is more easily remembered by the user. Unlike trademarks, a domain name does not grant an exclusive and exclusionary right over a sign. Moreover, the use of a domain name whose name constitutes a third-party trademark right may constitute an infringement of that trademark right.
What is a patent?
A patent is a form of industrial property protection conferred on an invention.
The protection conferred by the patent constitutes a true legal monopoly in favour of its owner. The mechanics of patent protection are easily understood if it is reflected as a contract between the State and the inventor. Let’s say that the inventor has devised and developed an invention that has taken time, effort and, in most cases, a fairly substantial financial investment, and it is fair that he wants to obtain the defence of his invention before third parties who have not committed that time and effort. However, granting inventor protection indefinitely would paralyse technological progress and block the market in watertight monopolies, ultimately to the detriment of all users and consumers. It wouldn’t make sense. That’s why the State grants a legal monopoly for a fixed period of time (in Spain and Europe, generally a maximum of 20 years), after which the patent falls into the public domain and can be freely exploited (and commercialised, of course) by anyone.
But the contractual obligations don’t end there. Since it is difficult for an invention to be studied and developed in a very short time, it would also block technological progress if the inventor’s competitors were unable to access clear and complete information about the invention (except through reverse engineering, which is often complicated), so that they could improve it or make new inventions with different or more useful industrial applications on the basis of the first one. That’s why the State requires (as an inexorable condition for conclusion of the contract) that the patent, when applied for, be drafted in such a way that any expert in the field can execute it. This is so that, firstly, it can be improved without being infringed during its period of validity and, secondly, at the moment it falls into the public domain, that an excessive amount of time does not pass until competitors begin to develop and/or market it, if they are interested in doing so. Thus, it is the inventor himself who must explain in the most comprehensive way possible what his patent consists of, in which field of technology it operates, what its function is, what problem it improves or solves and what already exists in the state of the art on which he has based himself.
What is patent protection?
In general terms, the content of the legal monopoly granted by the State to the holder of the patent consists in the ability of the holder to be the only party with the right to exploit the patent in the market of the protection territory, with the consequent advantage of being able to license his patent (exclusively, without exclusivity, for a certain part of the territory, whether or not for a certain period, for specific uses, etc.) to third parties interested in exploiting it, which normally results in a financial consideration. If you wish to patent an invention, you can write to us or call; we’ll be happy to help you.
What requirements do I have to satisfy before I can patent an invention?
To be protected by a patent, an invention must be new, involve an inventive step and be capable of industrial application.
What does ‘novel’ involve?
An invention is new when it is not included in the state of the art. The state of the art is held to comprise everything made available to the public in Spain or other countries by means of a written or verbal description, by use, or in any other way, before the date of filing of the patent application. The state of the art also includes patent applications with effect in Spain which, although not published on the date of filing the patent for which protection is sought, are published on that date or at a later date. In other words, an invention can be prevented from patentability in Spain by another patent application in Spain that has not yet been published but is published at a later date.
The state of the art is at international level, even if the protection granted under the patent is territorial (national or regional); and it is not only covered by the published patents or patent applications, but also by any other description of the invention, written or verbal, by a use, or by any other means of publication or disclosure (a post on an Internet blog, a video on YouTube, a magazine article, etc.).
What is inventive activity?
While novelty operates on a level of identity (the invention is already in the state of the art), an invention has an inventive step if it does not result from the state of the art in a way that is obvious to a person skilled in the art.
This means that it is possible that the invention which is the subject of the patent application does not actually exist in the state of the art, but that it is obvious to a person skilled in the art -in light of the existing state of the art- that the conclusion drawn by the inventor could be reached.
The analysis of the inventive step, pursuant to case-law and praxis of the registration offices, must be as objective as possible. However, unfortunately it is up to the examiner in charge of the patent (who must be a person skilled in the field of the invention) to determine whether it is obvious or clear to think that the invention at hand could be arrived at in view of what already existed in the state of the art. This is not always easy, and can give rise to subjective and conflicting opinions.
Can I patent a computer program?
Computer programs or software have their own specific protection through intellectual property, not industrial property. In fact, our Patent Law expressly excludes computer programs from protection as non-patentable inventions.
However, there may be exceptions to this general idea. Applicable legislation excludes these inventions from patentability provided that the patent application refers to one of them considered as such. This means that our patent application may contain a computer program if the invention is not exclusively limited to it. One example of this could be a robotic arm that enhances, automates and speeds up the production line of a factory and is software-controlled.
Can I patent a business model?
In addition to the requirements of novelty, inventive step and industrial application, the invention, in order to be patentable, must not fall under any of the cases of prohibition of patentability or non-patentable inventions set out in our legislation. These include plans, rules and methods for the exercise of economic-commercial activities, so that a business model as such (if it is not embodied in an invention with industrial application) cannot be patented.
It should also be borne in mind that patents grant a monopoly to their holder for up to 20 years, so that granting patents on business models would close the market and undermine the principle of free competition, to the detriment of the end consumer.
Can I patent an idea?
If you have had an idea but have not implemented it, it is difficult for an invention as such to have an industrial application, so it would not be patentable. A very frequent mistake is to think that an idea in itself is protectable, when the reality is that it is not. Our legislation on industrial and intellectual property does not allow exclusive protection simply of an idea, if it cannot be included in any of the figures set out in the regulations (a work, an invention, a distinctive sign, a design, etc.).
What is the industrial application?
The industrial application of an invention is fulfilled when the object of the invention can be manufactured or used in any kind of industry.
I have an invention. What’s the next step? How do I patent an invention?
First and foremost, under no circumstances should you publish or disclose your invention without first talking to a specialist. As explained in one of the earlier questions, for an invention to be patentable it must be new, i.e. it cannot exist in the state of the art. A simple publication or disclosure by the inventor himself, before he has obtained a filing date for his patent application, may hinder the novelty of the invention and close the way to its patentability.
Important, important, important: if you have developed an invention and think it might be patentable, do not reveal it!
What you need is to talk to a specialist who will help and advise you on the possibilities of action, the steps to be taken and the costs of patentability. At Bamboo we are patent lawyers, so we can give you a hand (or two).
Where can I register my patent?
The rights conferred by a patent, similarly to trademarks, are territorial. Trying to obtain patent protection for your invention in almost every country in the world is something that only the biggest companies can do, because the costs will be extremely high.
The usual thing is to start by trying to obtain protection in the country where the invention has been developed, which will normally be your main target market, as this is the one you usually know best (which has probably also led you to come up with the invention).
Once the patent has been obtained, you have one year according to the Paris Union Convention to extend protection to other countries while keeping the priority date of the first application. The most normal thing to do then is to turn to an international patent or PCT, which is not a very expensive mechanism that allows us to gain some time (a few more months) to think definitively in which specific countries we are going to try to obtain protection.
How long does a patent last?
In Spain, the maximum is 20 years. After this 20-year period, the patent falls into the public domain and is freely exploitable by anyone.
In order to maintain the patent for its maximum duration, the holder must pay maintenance or annual fees. According to our regulations, the patent filing fee already covers the first two annual periods.
How do the registration offices know whether my invention exists in the state of the art or not?
In the course of the patent procedure, the registration office prepares a state-of-the-art report (IET), citing all the publications and disclosures it has detected that may hinder patentability of the invention. Some of these publications may affect novelty, and others may affect the inventive step.
The report is accompanied by the examiner’s written opinion explaining why the publications noted above hinder the patentability of the invention.
According to our current regulations, Patent Law 24/2015, which replaced previous Patent Law 11/1986, the fee for the preparation of the report on the state of the art must be paid at the time of filing the patent.
Once the IET has been published, the patent applicant has three months to request substantive examination. This examination is the determining factor for the grant or refusal of the patent, and shall take into account the publications and disclosures identified in the IET.
How do I know whether or not an invention is patented?
To find out whether or not a third party’s invention has a patent right, the best thing you can do is contact a specialist. Specialised tools are available to perform patent searches. At Bamboo, before proceeding to patent an invention, we always carry out a thorough investigation of the state of the art to determine the possibilities of success of the patent. It is not always 100% reliable, but it gives both us and the inventor an idea about the patentability of his invention.
What is an industrial design?
An industrial design is a form of industrial property that protects the external appearance of products. In particular, an industrial design protects the lines, contours, colours, shape, texture or materials of products or their ornamentation. At Bamboo we are lawyers that specialise in industrial designs.
What are the requirements for an industrial design to be protected?
In general, for the industrial design of a product to be worthy of protection it must have novelty and a singular nature.
What does ‘novel’ involve?
An industrial design is novel when no identical design has been made available to the public before the filing date of the application for registration. Unlike patents, the novelty here need not be international: no identical design that would have been known to specialist circles in the sector concerned operating in the European Union should have been made public. On the other hand, it is understood that a design is identical if it differs only in insignificant details.
What does singular nature mean?
The singular nature is marked by the overall impression produced on the informed user by the design for which protection is claimed. If the overall impression of the informed user does not differ from that of other designs already made available to the public prior to our application, our design will not be unique. Note that a design may be novel and unique, but this is not easy the other way around (if it is identical to a previous design, logically its overall impression will also be the same). In fact, it is the uniqueness that truly marks the limits of registrability.
Can I break my own novelty?
In a similar way to patents, a designer can hinder the very registrability of his design by making it public prior to filing for registration. However, in the case of industrial designs there is a grace period of one year from the initial disclosure of the design during which its owner can apply for registration of his design registration.
How do I obtain industrial design protection?
There are two types of industrial design protection: the registered design and the unregistered design. Unregistered design protection is obtained, without registration, from the moment the new and unique design is first made public in the European Union. This is especially common for products that are not expected to be on the market for a long time (e.g. fashion products), for which registration is often not sought. Registered design protection is obtained, of course, once registration has been completed. At Bamboo we are lawyers specialising in industrial designs, so we can help you with the registration and protection of the appearance of your products.
What is the protection granted by industrial design?
The protection granted by the industrial design extends to any design that does not produce a different overall impression on the informed user. The industrial design right also has a positive side (as an exclusive right) and a negative side (as an exclusionary right), so it is configured as a true legal monopoly over the appearance of a product.
How long does an industrial design last?
The duration of protection of a registered industrial design is five years, renewable in five-year periods up to a maximum of 25 years. The duration of protection of an unregistered industrial design is three years from the time it was first made available to the public in the European Union.
What is the difference between an industrial design and a three-dimensional trademark?
As we know, protection by way of a trademark affects a sign that is capable of identifying a business origin and therefore has distinctive capability. Sometimes trademarks are not names or logos but signs that are far more complex from a commercial standpoint. A trademark may be a colour, a sound or even a movement, provided that those signs are sufficiently distinctive for the consumer to associate that sign with an economic operator. The same holds true for three-dimensional shapes. Thus, the shape of a product can constitute a trademark. So what is the difference with industrial designs? Note that the requirement for protection is much higher for trademarks: the sign must be distinctive. In the case of designs, novelty and uniqueness do not require such differentiating capacity. If your product is so distinctive that you think it could be a three-dimensional brand, we want to see it. As industrial design and trademark lawyers, we will be able to assess this with you.
What is intellectual property?
Intellectual property is a special property that regulates author’s rights and related rights, commonly known as copyright. In Spain, unlike many countries, especially those of Anglo-Saxon origin, we distinguish between intellectual property and industrial property. Abroad, both properties are usually included under the figure of “intellectual property”. At Bamboo we specialise in intellectual property, so we can help you if you have any questions related to the subject.
What are the differences between intellectual property and industrial property?
As two independent branches of the law, there are many. First and foremost, intellectual property rights do not arise from registration, as is the case with the various forms of industrial property (except for unregistered design or well-known unregistered trademark, which are the main exceptions). Intellectual property rights arise from the very moment of creation. It is usually recorded for the purposes of evidence in the event of subsequent disputes (e.g. plagiarism by a third party).
What protects intellectual property?
Just as trademarks protect signs, patents protect inventions, and designs protect the external appearance of a product, intellectual property protects works. These works can be books, writings, lectures, musical compositions, theatrical works, audio-visual works, sculptures, paintings, projects, plans, graphics, photographs, and a lengthy etcetera. The title of a work, if it is original, can also be protected in this way.
What are the requirements for a work to be protected by intellectual property?
According to our prevailing regulations, a work must be an original creation in order to be the object of intellectual property. This originality implies that the creation has a certain creative level, and that it somehow reflects the personal imprint of its author.
Who is considered an author?
An author is a natural person (not a legal entity) who creates a literary, artistic or scientific work.
What kind of rights does an author hold over his work?
Authors’ intellectual property rights are classified into moral rights and economic rights.
Moral rights are those that do not have a proper economic component, and are not transferable. Some of them even remain until after the author’s death. For example, these moral rights include the author’s right of authorship (his right to be named as the author of the work), the author’s right to decide whether or not to disclose his work, or the right to withdraw the work from the marketplace because of changes in his intellectual or moral convictions.
Exploitation rights, on the other hand, are essentially those of an economic content. The author holds at least four exploitation rights over his work: reproduction, distribution, public communication and transformation. These rights, unlike moral rights, can be assigned or licensed.
What is the right of reproduction?
It is the author’s right to directly or indirectly fix the work or part of it on a medium that permits its communication or the obtaining of copies. An example of reproduction would be the printing of a book, but so would the downloading of an electronic file.
What is the right of distribution?
Distribution consists of making the work available to the public on a tangible medium. Tangibility is key in the exercise of the right of distribution. In order for there to be distribution, of course, there had to be reproduction beforehand. An example of distribution would be the sale of a book in a bookstore.
What is the right of public communication?
Of the four exploitation rights, the right of public communication is the one that offers the most complications, perhaps because of the difficulty in many cases of understanding (and explaining) it. Our legislation states that public communication is any act by which a plurality of persons can access the work without prior distribution of copies to each of them, and without communication being held in a strictly domestic setting. This involves the opposite extreme of public communication of distribution: the key is intangibility. An example of public communication could be the theatrical performance of a play, or the showing of a film in a cinema; but also the downloading of an electronic file in .mp3 format or the viewing of a video online in streaming, for example. Rivers of ink have been written about the right of public communication and there are many variations on the exercise of this right. One of the main debates in recent years has been the placement of links, and whether or not linking to third-party content constituted an exercise (mostly non-consensual) of the right of public communication. If you’re interested in the subject, you can read more here.
What is the right of transformation?
The right of transformation includes any modification of the work resulting in a different one. It should be noted that not every modification of the work is a transformation; from the result of the transformation another work must be derived, with its particular originality, as the first one had. The exercise of this right gives rise to so-called derivative works.
How long do the exploitation rights last?
The exploitation rights over a work protected by intellectual property, according to our current regulations in Spain, generally last 70 years from the death of the author or from his declaration of death.
Can the author publish his work under a pseudonym?
Yes. Prevailing regulations on intellectual property allow the author to publish or disclose his work under his name, under a pseudonym or sign, or anonymously.
Are there other rights besides copyright?
Yes. Our intellectual property law also expressly regulates the rights of artists, performers, producers of audio-visual works and phonographic works, the rights of producers of mere photographs and the rights of publishers. These are the so-called related rights.
Do photographs have a specific regime?
Yes. If a photograph is sufficiently original to be considered a work of art, it will be treated in the same way as any other work of art. However, there are photographs that can have a certain creative level but not have sufficient originality to qualify as works (portraits, landscape photographs, product catalogue photographs, etc.). In these cases, our legislation grants special protection to the takers of mere photographs, who also have rights of reproduction, distribution and public communication of their mere photograph, but whose duration is shorter than in the case of copyright: 25 years from the 1st of January of the year following the date of the photograph.
Do computer programs have a specific regime?
Yes. Computer programs are governed by intellectual property regulations. Generally speaking, software as such is not subject to patent.
What role do collecting societies play in all this?
We have all heard about the famous collecting societies (among others, SGAE, CEDRO, EGEDA, AISGE, AIE…). The function of these entities is to manage and administer the exploitation rights of the owners (whether authors, artists, publishers or producers), so that they do not have to grant authorisations or licences individually in each case. These entities also manage the so-called remuneration rights (rights to obtain financial compensation, in some cases this cannot be waived, in certain cases of exercise of rights by third parties), whether or not their owners are members of the entity. In theory, collecting societies should be non-profit making and should have simple and clear fees and transparent financial management.